Court: Photos Not Needed in Trademark Application

(CN) – The Federal Circuit reinstated a trademark application for “One Nation Under God” charity bracelets, saying the applicant’s failure to submit a picture of the bracelet does not automatically trigger rejection.

Michael Sones notified the U.S. Patent and Trademark Office that he intended to use the mark to sell charity bracelets online. He submitted two Web pages titled “Beaches Chapel School Store,” listing “One Nation Under God” charity bracelets, “choice of blue or red $2.00 each.” The PTO rejected his application because he hadn’t submitted pictures of the bracelets, apparently because he didn’t have them yet. The Trademark Trial and Appeal Board affirmed, echoing the examiner’s belief that Sones needed a picture. “Upon examination of the webpages, it is readily apparent that they do not include a picture of the goods,” the board wrote. The Federal Circuit said the board, not the law, had created the picture requirement. “[T]he Board’s bright-line rule has no basis in trademark statute or policy,” Judge Linn wrote. “[W]e see no reason why websites must necessarily have pictures to associate a trademark with the goods being sold.” Linn added that “the test for an acceptable website-based specimen, just as any other specimen, is simply that it must in some way evince that the mark is ‘associated’ with the goods and serves as an indicator of source.” The court vacated and remanded for reconsideration under the correct legal standard.